United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
NONFINAL OFFICE
ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned Respond using the Trademark Electronic Application System
(TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: June 22, 2020
The Office
has reassigned this application to the undersigned trademark examining attorney.
This Office action is in response to applicant’s communication filed on May 20, 2020.
The requirements for acceptable identifications and classification of goods and services are satisfied in part and maintained and continued in part. The requirements to indicate the significance of the mark and provide an amended mark description are satisfied.
Based upon applicant’s response and upon further review, the following new issues must be addressed:
SECTION 2(e)(2) REFUSAL – PRIMARILY GEOGRAPHICALLY DESCRIPTIVE
Registration is refused because the applied-for mark is primarily geographically descriptive of the
origin of applicant’s goods and/or services. Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); see TMEP §§1210, 1210.01(a).
A mark is primarily geographically descriptive when the following is demonstrated:
(1) The primary significance of the mark to the purchasing public is a generally
known location;
(2) The goods or services originate in the place identified in the mark;
and
(3) The purchasing public would be likely to believe that the goods or services
originate in the geographic place identified in the mark; that is, to make a goods-place or services-place association.
TMEP §1210.01(a); see In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1452
(Fed. Cir. 1987); In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1853 (TTAB 2014); see also In re Newbridge Cutlery Co., 776 F.3d 854, 860-61, 113 USPQ2d 1445, 1448-49 (Fed.
Cir. 2015).
In this case, applicant’s mark is LA stylized. The attached evidence from www.wikipedia.org shows that Los Angeles or LA is a generally known geographic location. See the attached evidence.
The adjectival form of the name of a geographic location, its nickname, abbreviation or other variant is
treated the same as the actual name of the geographic location when it would likely be perceived as such by the purchasing public. See In re
Premiere Distillery, LLC, 103 USPQ2d 1483, 1484 (TTAB 2012) (holding REAL RUSSIAN primarily geographically deceptively misdescriptive of vodka); In re Joint-Stock Co.
“Baik,” 80 USPQ2d 1305, 1310 (TTAB 2006) (holding BAIKALSKAYA, the Russian equivalent of “from Baikal” or “Baikal’s,” primarily geographically descriptive of vodka); TMEP §1210.02(a). In this case, the attached evidence shows that the purchasing public who encounters applicant’s mark would perceive the mark as the same as the terms Los Angeles since LA is a
recognized abbreviation for Los Angeles. See the attached evidence.
Goods are considered to originate from a geographic location when the record
shows that the goods are sold there, manufactured or produced there, packaged and shipped from there, and/or contain a main ingredient or component derived from there. See In re Jacques Bernier Inc., 894 F.2d 389, 391-92, 13 USPQ2d 1725, 1727 (Fed. Cir. 1990), opposition sustained sub nom. Fred Hayman
Beverly Hills, Inc. v. Jacques Bernier Inc., 38 USPQ2d 1691 (TTAB 1996) (holding applicant’s perfume did not originate from RODEO DRIVE because, although goods did not have to be manufactured or
produced at the geographic site and could “be sold there” to originate from the geographic location, there was insufficient evidence to show that perfume was sold on RODEO DRIVE); In re Joint-Stock Co. “Baik,” 80 USPQ2d 1305, 1310 (TTAB 2006) (holding applicant’s vodka originated from BAIKALSKAYA, a Russian word meaning “from Baikal,” because it was made from the
water of Lake Baikal and applicant produced various vodkas from a location near Lake Baikal); In re JT Tobacconists, 59 USPQ2d 1080, 1083 (TTAB 2001) (holding applicant’s
cigars, cigar cases, and humidors originated from MINNESOTA because they were packaged and shipped from MINNESOTA, and applicant’s business was located in MINNESOTA); In re
Nantucket Allserve Inc., 28 USPQ2d 1144, 1145-46 (TTAB 1993) (holding applicant’s beverages originated from NANTUCKET because labels for applicant’s goods suggested a connection with NANTUCKET,
additional evidence suggested that some ingredients came from NANTUCKET and that applicant’s goods were sold at applicant’s store located in NANTUCKET, and applicant’s corporate headquarters and
research and development center were located in NANTUCKET); TMEP §1210.03.
For services to originate in a geographic place, the record must show that they are rendered
at least in part in the geographic place. See In re Chalk’s Int’l Airline Inc., 21 USPQ2d 1637 (TTAB 1991) (holding PARADISE ISLAND AIRLINES
primarily geographically descriptive of air transportation services of passengers and/or goods that are performed at least in part on Paradise Island); In re Cal. Pizza Kitchen
Inc., 10 USPQ2d 1704 (TTAB 1988) (holding CALIFORNIA PIZZA KITCHEN primarily geographically descriptive of restaurant services rendered in California and outside the state as well); In re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986) (holding THE NASHVILLE NETWORK primarily geographically descriptive of television production and distribution services provided in
Nashville); TMEP §1210.03.
The USPTO has long held that a goods-place or services-place association is presumed where (1)
the location in the mark is generally known to the purchasing public, (2) the term’s geographical significance is its primary significance, and (3) the goods and/or services do, in fact, originate
from the named location in the mark. TMEP §1210.04; see, e.g., In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704, 1705 (TTAB
1988) (finding a services-place association was presumed between applicant’s restaurant services and California because the services originated in
California); In re Handler Fenton Ws., Inc., 214 USPQ 848, 850 (TTAB 1982) (finding a goods-place association was presumed between applicant’s
t-shirts and Denver because the goods had their geographical origin in Denver); see also In re Nantucket, Inc., 677 F.2d 95, 102, 213 USPQ 889, 895
(C.C.P.A. 1982) (Nies, J., concurring) (“[W]e must start with the concept that a geographic name of a place of business is a descriptive
term when used on the goods of that business. There is a public goods/place association, in effect, presumed.” (internal footnote removed)).
To establish a goods-place or services-place association, the trademark examining attorney’s
evidence need only show a “reasonable basis” for concluding that the public is likely to believe that the mark identifies the place from which the goods and/or services originate. See In re JT Tobacconists, 59 USPQ2d 1080, 1083-84 (TTAB 2001) (finding that nothing in the record suggested that it would be incongruous or unexpected
for the purchasing public to believe that applicant’s cigars, cigar cases and humidors, “manufactured products which could have their origin practically anywhere,” came from the place named in the
mark, as applicant was located in the place and the goods were packaged and shipped from the location, such that consumers would have a reasonable basis to believe the goods came from the place named
in the mark); In re Cambridge Digital Sys., 1 USPQ2d 1659, 1661-62 (TTAB 1986) (finding that the location named in the mark was renowned for educational institutions and the
record demonstrated the location was a manufacturing and commercial center producing related goods such that purchasers of applicant’s goods would reasonably believe they emanate from the place named
in the mark); see also TMEP §1210.04; In re Loew’s Theatres, Inc., 769 F.2d 764, 768, 226 USPQ 865, 868 (Fed. Cir. 1985).
The goods and services originate in the geographic location named in the mark as shown by the attached evidence. Thus, the goods-place and
services-place association is presumed in this case. Moreover, nothing in the record suggests that it would be incongruous or unexpected for the purchasing public to
believe that the goods and services originate in the geographic place named in the mark.
Finally, the applied-for mark shows the wording in stylized lettering. Stylized descriptive or generic wording is registrable only if the stylization creates a commercial impression separate and apart from the impression made by the wording
itself. See In re Cordua Rests., Inc., 823 F.3d 594, 606, 118 USPQ2d 1632, 1639-40 (Fed. Cir. 2016); In
re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1561, 227 USPQ 961, 964 (Fed. Cir. 1985); TMEP §1209.03(w). Common and ordinary
lettering with minimal stylization, as in this case, is generally not sufficiently striking, unique, or distinctive as to make an impression on purchasers separate from the wording. See In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1487 (TTAB 2012).
Based upon the foregoing, registration is refused as applicant’s mark is primarily geographically descriptive of the origin of applicant’s goods and services.
SECTION 1(b) APPLICATION NOT ELIGIBLE FOR REGISTRATION ON THE SUPPLEMENTAL REGISTER UNTIL AN ACCEPTABLE
AMENDMENT TO ALLEGE USE IS FILED
A mark in an application under Trademark Act Section 1(b) is not eligible for
registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed. 37 C.F.R. §§2.47(d), 2.75(b); TMEP
§§815.02, 1102.03. When a Section 1(b) application is successfully amended to the Supplemental Register, the application effective filing date will be the date
applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for the amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R.
§2.75(b).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by
submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirements set
forth below.
IDENTIFICATIONS OF GOODS AND SERVICES
The wording “ornamental novelty pins” in the identification of goods in International Class 14 is indefinite
and misclassified. Ornamental novelty pins are properly classified in International Class 26. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording in International Class 26, if accurate: “ornamental novelty pins.”
The wording “Subscription to a television channel, namely, continuing subscription video program in the field
of sports broadcast over the internet and a continuing subscription audio program in the field of football broadcast over the internet” in the identification of services for International Class 38
must be clarified because it is indefinite and too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01,
1402.03. In particular, this wording could encompass subscription to a television channel, namely, a continuing subscription featuring a video program in the field
of sports broadcast over the internet and a continuing subscription featuring an audio program in the field of football broadcast over the internet in International Class 35.
Applicant may substitute the following wording in International Class 35, if accurate: subscription to a television
channel, namely, a continuing subscription featuring a video program in the field of sports broadcast over the internet and a continuing subscription featuring an audio program in the field of
football broadcast over the internet.
The wording “wireless communications services, namely, transmission of information, namely, text, graphics, data, and entertainment information to mobile phones; mobile media
services in the nature of electronic transmission of entertainment media content” in the identification of services is indefinite and must be clarified because it does not indicate what the services
are with the required specificity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording,
if accurate: wireless communications services, namely, electronic transmission of information, namely, text, graphics, data, and entertainment
information to mobile phones; mobile media services in the nature of electronic transmission of voice, data, images, signals, and messages featuring entertainment media
content.
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original
application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods
and/or services may not later be reinserted. See TMEP §1402.07(e).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
The application identifies goods and/or services that are classified in at least 7 classes; however, applicant
submitted a fees sufficient for only 5 classes. In a multiple-class application, a fee for each class is required. 37 C.F.R.
§2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01. For more information about adding classes to an application, see the Multiple-class Application
webpage.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each
additional class.
The USPTO changed the federal trademark rules to eliminate the TEAS RF application, which is now
considered a “TEAS Standard” application. See 37 C.F.R. §2.6(a)(iii). The fee for adding classes to a TEAS
Standard application is $275 per class. See id. For more information about these
changes, see the Mandatory Electronic Filing webpage.
The application identifies goods and/or services in more than one international class; therefore,
applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods
and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee
for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in
at least 7 classes; however, applicant submitted a fees sufficient for only 5 classes. Applicant must either submit the filing fees for the classes not covered by
the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic
Application System (TEAS) form, see the Multiple-class Application webpage.
INFORMATION REQUEST
Applicant must provide a written statement specifying where the goods and/or services will come
from or will originate. See 37 C.F.R. §2.61(b); TMEP §§814, 1210.03. Failure to comply with a request for
information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
Applicant must provide a written statement explaining whether the goods are manufactured, packaged,
shipped from, sold in or have any other connection with the geographic location named in the mark. See 37 C.F.R. §2.61(b); TMEP §§814,
1210.03. Failure to comply with a request for information is grounds for refusing registration. In re Harley,
119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
Applicant must provide a written statement explaining whether the services or any aspect of the
services will be rendered in, or will have any other connection with, the geographic location named in the mark. See 37 C.F.R. §2.61(b); TMEP
§§814, 1210.03. Failure to comply with a request for information is grounds for refusing registration. In re
Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
ASSISTANCE
Please call or email the assigned trademark examining attorney with questions about this Office
action.
How to respond. Click to file a response to this nonfinal Office action.
/Anne M. Farrell/
Law Office 118
Trademark Examining Attorney
anne.farrell@uspto.gov (informal responses only)
(571) 272-9709
RESPONSE GUIDANCE
- Missing the response deadline to this letter will cause the
application to abandon. A response or notice
of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely
respond.
